DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Receipt of Remarks/Amendments filed on 07/28/2026 is acknowledged. Claims 1-2, 9, 13, 17-18, and 25 are amended and claims 12 and 19-23 are canceled. Claims 1-11, 13-18, and 24-25 are currently pending and are examined on the merits herein.
Priority
The instant application filed 07/24/2024, is a 371 filing of PCT/GB2023/050140, filed 01/23/2023, which claims foreign priority to EP22382048.1, filed 01/24/2022.
Withdrawn Objections/Rejections
Claims 13 and 17-18 were objected to for informalities. Applicant’s amendment’s to the claims have overcome the objections and the objections are withdrawn.
Claims 2, 9, and 17-18 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendment’s to the claims have overcome the rejections and the rejections are withdrawn.
Applicant’s cancellation of claim 12 has rendered any prior rejections of this claim moot.
The following grounds of rejection are necessitated by amendment:
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
1. Claims 1-11, 13-18, and 24-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 25 recite “wherein the method comprises applying a composition comprising cyazofamid in an amount of 10 ml/100 kg of seed to 300 ml/100 kg of seeds”. It is unclear if the amounts refer to the amount of the total composition per 100 kg of seed or the amount of the cyazofamid per 100 kg of seed. For the sake of compact prosecution, the claim will be interpreted as the former.
The remaining claims are rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1. Claims 1-9, 13, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Honda, T., et al. (EP 1943901 A2, 07/16/2008, IDS dated 10/24/2024), hereinafter Honda, as evidenced by Ranman fungicide commercial label (2026). Manufactured for FMC Corporation (on record), hereinafter Ranman.
Honda discloses a method of controlling plant disease comprising attaching at least one fungicidal active compound selected from 3-(3-bromo-6-fluoro-2-methylindol-1-ylsulfonyl)-N,N-dimethyl-1H-1,2,4-triazole-1-sulfonamide, cyazofamid, fluazinam, ethaboxam and benthiavalicarb to a seed of a plant (abstract; claim 1).
Regarding claim 1: Various examples of Honda disclose the treatment of seeds with a suspension concentrate of cyazofamid (Test Ex. 2, [0090]; Test Ex. 3, [0099]; Test Ex. 4, [0107]). Such a method reads on applying cyazofamid to a plant propagation material. Test example 4 discloses treatment with a suspension concentrate of cyazofamid to obtain seeds painted at a rate of cyazofamid of 100 g ai/100 kg seed ([0107]). The test examples of Honda utilize a suspension concentrate of cyazofamid under the tradename “Ranman” ([0090]). Such a formulation comprises 400 grams of cyazofamid per liter of the suspension concentrate, as evidenced by Ranman. Thus, the amount of the suspension concentrate (SC) (i.e., composition comprising cyazofamid) applied in mL per 100 kg of seed can be calculated as such:
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An application amount of 250 mL/100 kg seed falls within the instantly claimed range (i.e., 10-300 mL/100 kg seed).
The recitation of “improving plant growth” is simply a statement of purpose or intended use. “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation". See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). Since Honda teaches every structural limitation of the instantly claimed method it is inherent that such a method will have the same intended effect as the claimed method. Even in the case where an intended use is limiting, “a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In each of the examples above the cyazofamid painted seed showed much lower incidence of disease as compared to untreated seeds (Tables 2-4). One of ordinary skill in the art would reasonably conclude that a decreased incidence of disease would directly result in the improvement of plant growth as claimed.
Regarding claims 2 and 3: The plant propagation material is a seed (Test Ex. 2-4).
Regarding claim 4: Test example 4 discloses treatment with a suspension concentrate of cyazofamid diluted 65-fold to obtain seeds painted at a rate of cyazofamid of 100 g ai/100 kg seed ([0107]), which falls within the instantly claimed range (i.e., 1-500 g ai/100 kg seed).
Regarding claim 5: The above application rate of 100 g ai/100 kg seed of cyazofamid further falls within the instantly claimed range (i.e., 5-250 g/100 kg seed).
Regarding claims 6-8: Cyazofamid is applied in the form of a suspension concentrate (Test Ex. 2-4), which reads on a liquid composition as well.
Regarding claim 9: Honda utilizes a suspension concentrate of cyazofamid under the tradename “Ranman” in the test examples ([0090]). Ranman comprises 34.5% of cyazofamid, as evidenced by Ranman, which falls within the instantly claimed range (i.e., 10-60% w/v).
Regarding claim 13: Test example 4 treats green pepper seeds, which read on vegetable seeds.
Regarding claim 25: Test example 4 discloses seed treatment with a suspension concentrate of cyazofamid to obtain seeds painted at a rate of cyazofamid of 100 g ai/100 kg seed ([0107]). The test examples of Honda utilize a suspension concentrate of cyazofamid under the tradename “Ranman” ([0090]). Such a formulation comprises 400 grams of cyazofamid per liter of the suspension concentrate, as evidenced by Ranman. Thus, the amount of the suspension concentrate (SC) (i.e., composition comprising cyazofamid) applied in mL per 100 kg of seed can be calculated as such:
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An application amount of 250 mL/100 kg seed falls within the instantly claimed range (i.e., 10-300 mL/100 kg seed).
Test example 4 is a test for controlling phytophthora blight, wherein cyazofamid painted seeds result in a lower incidence of disease as compared to untreated seeds (Test Ex. 4; Table 4), thereby reading on a method of inhibiting phytopathogenic fungi. Despite this teaching however, the recitation of “inhibiting phytopathogenic fungi” is simply a statement of purpose or intended use. “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation". See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). Even in the case where an intended use is limiting, “a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim”. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Thus, the method of Honda reads fully on the instantly claimed method of inhibiting phytopathogenic fungi.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claims 1-11, 13-14 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Honda, T., et al. (EP 1943901 A2, 07/16/2008, IDS dated 10/24/2024), hereinafter Honda, as evidenced by Ranman fungicide commercial label (2026). Manufactured for FMC Corporation (on record), hereinafter Ranman.
The teachings of Honda are discussed above, as are the rejections of claims 1-9, 13, and 25.
Honda further teaches that the methods for attaching the active compounds of agricultural chemicals (i.e., cyazofamid) to a plant seed include a coating and granulation method which comprises adhering a coating material composed of an active compound, a binder and the like on the surface of a seed ([0023]-[0024]). The coating material can contain a dust diluent, a surfactant, a plasticizer, a colorant, a preservative, a water repellent agent, an anticaking agent, antidecomposer and the like, in addition to an active compound of agricultural chemicals and a binder ([0024]). Honda discloses various acceptable surfactants ([0030]-[0042]). A formulation example of coating material for seeds includes 0-30 parts of surfactant, with “part” meaning parts by weight ([0043]-[0044]). More specifically, a suspension concentrate formulation comprises from 1-12 parts surfactant and 0.01-30 parts of other ingredients, such as a cryoprotectant or a thickener ([0061]). Such ingredients read on the agrochemically acceptable excipients of claims 10 and 11.
As discussed above, the Test Examples of Honda utilize a suspension concentrate of cyazofamid under the tradename “Ranman” ([0090]). Such a composition comprises 34.5% active ingredient (cyazofamid) and 65.5% of other undisclosed ingredients, as evidenced by Ranman.
Honda further teaches that the plant seed used in the treatment method include seeds of food crops, vegetables, and also tubers and bulbs of flowering plants. The food crops include corn, wheat, and rice, while the flowering plants include sunflower ([0021]-[0022]), all of which read on the seeds of claim 14.
The teachings of Honda differ from that of the instantly claimed invention in that Honda does not explicitly teach a cyazofamid formulation comprising 0.1-30% w/w of an agrochemically acceptable excipient, as defined in claim 10 and selected from those listed in claim 11. Honda also fails to disclose an explicit embodiment wherein the treated seeds are selected from those listed in claim 14 and wherein the application rate is that of claim 24.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to incorporate an agrochemically acceptable excipient into the cyazofamid suspension concentrate of Honda since various excipients are known and routine in the art as taught by Honda. First, the suspension concentrate used in Honda, having the tradename “Ranman” comprises 65.5% of additional ingredients other than the active ingredient cyazofamid. While it is extremely likely that these additional ingredients comprise various agrochemically acceptable excipients selected from those listed in instant claim 11, such ingredients are not explicitly defined. In any case, one of ordinary skill in the art could have added any known and effective excipient into said cyazofamid SC according to known methods to predictably yield the instant invention. Specifically, one of ordinary skill in the art could have incorporated 1-12 parts by weight of a surfactant into the cyazofamid suspension concentrate since 1-12 parts of a surfactant is a known and effective component of suspension concentrates according to the formulations of Honda. The addition of 1-12 parts by weight of a surfactant reads on the instantly claimed amount of an agrochemically acceptable excipient, specifically a surfactant, as defined in claims 10 and 11.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to use the method of Honda for treating corn, wheat, rice, or sunflower seeds, since these seeds are known and routine seeds to be treated by such a method as taught by Honda. Honda teaches corn, wheat, rice, and sunflower seeds as exemplary seeds to be used in the method. As such, one of ordinary skill in the art could have applied the known cyazofamid treatment method of Honda to corn, wheat, rice, or sunflower seeds to predictably reduce crop disease in the same manner as shown in the test examples. Thus, the method of claim 14 is obvious.
While the cyazofamid application rate of 100 g/100 kg seed, taught by Honda, does not fall within the instantly claimed range (i.e.,10-50 g/100 kg seed), it is well within the abilities of an ordinary artisan to optimize the amount of cyazofamid applied per 100 kg of seed depending on the desired effect of the final method. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of claim 24 through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since every modification is suggested within the teachings and embodiments of Honda.
2. Claims 1-11, 13-17 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Honda as applied to claims 1-11, 13-14 and 24-25 above, and further in view of Bayer CropScience AG (EP 2524601 A1, 11/21/2012, on record), hereinafter Bayer, as evidenced by Fosetyl-Aluminum (302) (2013). FAO Specifications and Evaluations for Agricultural Pesticides. Prepared by Mr. D Lunn (on record), hereinafter the FAO.
The teachings of Honda are discussed above, as are the rejections of claims 1-11, 13-14, and 24-25.
Honda further teaches that other active compounds of agricultural chemicals can be used in addition to the fungicidal active compound of the invention. Additional active compounds include fungicides, synergists, etc. ([0015]).
The teachings of Honda differ from that of the instantly claimed invention in that Honda does not explicitly teach an embodiment comprising the application of both cyazofamid and an additional fungicide, as defined in claims 15-17.
Bayer discloses a fungicide composition, which comprises (A) a phosphorous acid derivative and (B) Cyazofamid, as well as a method for curatively or preventively controlling phytopathogenic fungi of plants or crops using a combination according to the invention for the treatment of seeds (abstract). The combinations (i.e., A+B) not only bring about the additive enhancement of the spectrum of action with respect to the phytopathogen to be controlled but achieves a synergistic effect which extends the range of action of the component (A) and of the component (B) in two ways. Firstly, the rates of application of the component (A) and of the component (B) are lowered whilst the action remains equally good. Secondly, the combination still achieves a high degree of phytopathogen control even where the two individual compounds have become totally ineffective in such a low application rate range. This allows, on the one hand, a substantial broadening of the spectrum of phytopathogens that can be controlled and, on the other hand, increased safety in use ([0004]). The phosphorous acid derivative is selected from the group consisting of phosphorous acid derivative metal phosphites, in particular (A-1) Fosetyl-Al, (A-2) Fosetyl-Na, and (A-3) Fosetyl-Ca ([0007]). The active compound combinations can be converted into customary seed dressing formulations, such as solutions, emulsions, suspensions, etc. or other coating materials for seeds ([0044]). Fosetyl-Al is a systemic fungicide with protectant action against a number of oomycete and ascomycete fungi, as evidenced by the FAO. The mode of action is by inhibiting germination of spores and by blocking development of mycelium, as well as inducing direct or indirect production of phytoalexin and pathogenesis-related proteins leading to an induction of plant defense mechanisms against fungal or bacterial pathogens. Fosetyl therefore reads on the systemic fungicide and host plant defense inducer of claim 17.
Bayer further teaches that when applying the compounds the dose of active compound/ application rate for seed treatment is typically from 2 to 250 g per 100 kg of seed, preferably from 3 to 200 g per 100 kg of seed, more preferably from 2.5 to 50 g per 100 kg of seed, even more preferably from 2.5 to 25 g per 100 kg of seed ([0098]; claim 7).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply a systemic fungicide, such as Fosetyl, alongside cyazofamid in the method of Honda since Fosetyl is a known and routine fungicide to use in combination with cyazofamid as taught by Bayer. One of ordinary skill in the art would have been motivated to apply Fosetyl in combination with cyazofamid since such a combination achieves a synergistic effect which allows a substantial broadening of the spectrum of phytopathogens that can be controlled and increased safety in use, as taught by Bayer. As discussed above, Fosetyl is a systemic fungicide which acts as a host plant defense inducer. It’s combination with cyazofamid in the method of Honda reads on claims 15-17.
Further regarding claim 24, Bayer teaches that the application rate for combined cyazofamid and Fosetyl seed treatment is effective at rates as low as 2.5 to 50 g or 2.5 to 25g per 100 kg seed. As discussed above, Honda teaches an application rate of 100 g ai/100 kg seed using cyazofamid alone, which could have been optimized into the instantly claimed range by the ordinary artisan. However, the combination of cyazofamid and a phosphorous acid derivative (i.e., Fosetyl) allows the rates of application to be lowered whilst the action remains equally good. Thus, it would have been further obvious that the combination of cyazofamid and Fosetyl would allow for a lower application rate than those taught by Honda. It would have been prima facie obvious to one of ordinary skill in the art to apply the combination, taught by Honda and Bayer above, in a method that applies cyazofamid at lower rates such as 2.5 to 50 g or 2.5 to 25g per 100 kg seed since these application rates are known and effective for synergistic cyazofamid mixtures, as taught by Bayer. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Honda and Bayer both teach seed treatment methods with compositions comprising cyazofamid, and Honda welcomes the addition of other fungicides and synergists.
3. Claims 1-11, 13-16, 18, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Honda as applied to claims 1-11, 13-14 and 24-25 above, and further in view of Ptock, A., et al. (US 20040039039 A1, 02/26/2004, on record), hereinafter Ptock.
The teachings of Honda are discussed above, as are the rejections of claims 1-11, 13-14 and 24-25.
Honda further teaches that other active compounds of agricultural chemicals can be used in addition to the fungicidal active compound of the invention. Additional active compounds include fungicides, synergists, etc. ([0015]).
The teachings of Honda differ from that of the instantly claimed invention in that Honda does not explicitly teach an embodiment comprising the application of both cyazofamid and an additional fungicide, as defined in claims 15, 16, and 18.
Ptock discloses fungicidal mixtures comprising A) imidazole derivatives of the formula I:
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, and B) a dithiocarbamate (II) in a synergistically effective amount, as well as methods for controlling harmful fungi using mixtures of the compounds I and II (abstract; claim 1). The mixtures provide an improved activity against harmful fungi combined with a reduced total amount of active compounds applied (synergistic mixtures), thereby reducing the application rates and improving the activity spectrum of the known compounds I and II ([0021]). Moreover, applying the compounds I and the compounds II simultaneously, i.e. together or separately, or applying the compounds I and the compounds II in succession provides better control of harmful fungi than is possible with the individual compounds alone ([0022]). The compound of the formula Ia (common name: cyazofamid) is particularly preferred as the imidazole derivative ([0025]; claim 2). Various dithiocarbamates are known such as mancozeb, maneb, metiram, and zineb ([0016]-[0020]).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply a dithiocarbamate alongside cyazofamid in the method of Honda since dithiocarbamates are a known and routine fungicide to use in combination with cyazofamid as taught by Ptock. One of ordinary skill in the art would have been motivated to apply a dithiocarbamate in combination with cyazofamid since such a combination achieves a synergistic effect thereby reducing the application rates and improving the activity spectrum of the known compounds, as taught by Ptock. Dithiocarbamates are a contact fungicide, as evidenced by the instant claims and their combination with cyazofamid in the method of Honda reads on claims 15, 16, and 18.
Further regarding claim 24, as discussed above, Honda teaches an application rate of 100 g ai/100 kg seed using cyazofamid alone, which could have been optimized into the instantly claimed range by the ordinary artisan. However, the combination of cyazofamid and a dithiocarbamate allows the reduction of application rates as taught by Ptock. Thus, it would have been further obvious that the combination of cyazofamid and a dithiocarmbamate would allow for a lower application rate than those taught by Honda. As such, one of ordinary skill in the art would have been motivated to lower the application rate taught by Honda, to arrive at the instantly claimed range of claim 24 via more than routine experimentation.
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since Honda and Ptock both teach methods of inhibiting phytopathogenic fungi using cyazofamid, and Honda welcomes the addition of other fungicides and synergists.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
1. Claims 1-12, 15-18 and 25 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-12, 15, and 20-23 of copending Application No. 18/832,577 (reference application).
The body of copending claim 1 recites an identical method as the body of instant claim 1. The recitation of “improving plant growth” versus “for inhibiting phytopathogenic fungi” simply defines a purpose or intended use. “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation". See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). Additionally, it is arguable that a method for inhibiting phytopathogenic fungi is also inherently a method of improving plant growth. Copending claim 12 further defines wherein the composition comprising cyazofamid is applied in an amount of 10 mL/100kg of seeds to 300 mL/100 kg of seeds. As such, copending claims 1 and 12 and instant claim 1 define the same method, as do copending and instant claims 2-11. Copending claims 20-23 define the same method as instant claims 15-18.
Copending claims 1 and 12 also define the same method as instant claim 25. The application of cyazofamid to seeds is defined by the teaching of applying at a rate of 10 ml/100 kg of seeds.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 17, and 18 of copending Application No. 18/832,577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate every element of instant claims 1, 3, and 13-14. Copending claim 15 recites a method of treating a seed for controlling phytopathogenic fungi comprising applying cyazofamid to seed in a specific amount, thereby encompassing every limitation of instant claims 1 and 3. Copending claims 17-18 define the same seeds as instant claims 13-14. As such, every element of claims 1, 3, and 13-14 is anticipated by copending claims 15, 17, and 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
(1) Applicant’s argue that the rejection of claim 1 is overcome by amending it to recite an application amount. Applicant argues that the claimed method has advantages demonstrated throughout the application while Honda does not recognize or suggest using cyazofamid to improve seed vigor, plant growth, gemination etc. (p. 6-7 of Remarks).
The amended amount was previously recited in claim 12 and was also rejected under 35 USC 102(a)(1) over Honda as evidenced by Ranman. Thus, such an amendment does not overcome the previous rejection. Regarding the lack of recognition by Honda for the advantages of the instant invention, it is discussed in the rejection above why the method of Honda reads on a “method of improving plant growth”. A method of improving plant growth is both an intended result/use of the instant method and is something that would inherently result if every structural limitation in the body of the claim is taught, which it is in the case of Honda. Furthermore, the method of Honda is for reducing disease incidence which one of ordinary skill in the art would immediately recognize as an effect leading to improved plant growth. It is further noted that the other features upon which applicant relies (i.e., seed vigor, germination, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
(2) Applicant further argues that Honda does not teach or suggest applying a composition comprising cyazofamid in an amount of 10 ml/100 kg to 300 ml/100 kg of seed. Applicant argues that Honda does not disclose the concentration of the suspension concentrate, the volume of the suspension concentrate applied, or whether the commercial product was used as supplied or diluted prior to seed treatment. Applicant argues that Neither Honda nor Ranman expressly teach or suggest applying the instantly claimed amount, rather the amount is derived only through reconstruction using information outside Honda (p. 7 of Remarks).
As discussed above, Honda teaches using a suspension concentrate of cyazofamid under the tradename “Ranman” ([0090]). The concentration of cyazofamid is inherent to that commercially available solution, and is 400 grams of cyazofamid per liter of the suspension concentrate, as evidenced by Ranman. Such a concentration is a matter of fact and would have been general knowledge to one of ordinary skill in the art prior to the effective filing date of the claimed invention. References cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Some specific examples in which later publications showing factual evidence can be cited include situations where the facts shown in the reference are evidence “that characteristics of prior art products were known, In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962)." Honda teaches a treatment method with the Ranman suspension concentrate that results in seeds painted at a rate of cyazofamid of 100 g ai/100 kg seed ([0107]). Regardless of how much of the Ranman SC was used or however many times it was diluted, the ultimate teaching is that cyazofamid ends up on the seeds at a concentration of 100 g per 100 kg of seed. Starting from the commercially available and known Ranman suspension concentrate, which reads on the instantly claimed composition comprising cyazofamid, one of ordinary skill in the art could have easily deduced the milliliter amount needed per 100 kg of seed to reach the desired dosage of 100 g of cyazofamid per 100 kg seed. Furthermore, the claims themselves do not define whether or not a dilution step occurs or what the actual concentration of the cyazofamid is in the composition. As such, the reconstruction of the amount applied in ml per 100 kg of seed is necessary. Honda does not have to teach the application amount word for word when it is inherently encompassed by the disclosure and would have been derived by one of ordinary skill in the art.
(3) Applicant provides similar arguments as above against the 103 rejections, also stating that neither Honda nor Ranman teach or suggest that applying the composition within the presently claimed range would achieve the technical advantages demonstrated in the present application.
In response to these arguments, Applicant has failed to prove or claim a feature that structurally differentiates the claimed method from that of Honda and the general knowledge available to the ordinary artisan prior to the effective filing date. In order to argue a technical advantage there must be a distinct structural difference between the claims and the prior art, and the Applicant must provide data comparing the closest prior art to the claimed invention showing an unexpected superior property. Furthermore, the assertion that the instantly claimed amount of the composition comprising cyazofamid (i.e., 10-300 ml/100 kg of seed) results in a technical advantage is not convincing since this amount provides no guidance on the actual amount of active which is applied to the seed since the actual concentration of the cyazofamid in the composition is not defined. The instantly claimed method could essentially encompass any known concentration of the cyazofamid, and considering that the cyazofamid is responsible for the therapeutic effect of the method, it is unlikely that any possible amount of the active could result in the technical advantages argued by the Applicant.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
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